This interim ruling addresses the issue of amending the Statement of Case in Opposition proceedings before the Israel Patent Office.
IL 209734 to G Patel titled “A monitoring system based on etching of metals” was allowed and published for Opposition purposes.
Freshpoint Quality Assurance Inc. opposed the patent, and after the Applicant submitted their counter statement, Freshpoint requested permission to amend their statement of case. They justified this request on the basis of the Applicant adding new details. They further argued that some of the amendments were necessary due to admissions of the Applicant in the counter-statement of case, and some were required to focus issues after the specification was twice amended following submission of the Opposition.
The Applicant considers that allowing Freshpoint to amend their statement of case would allow them to improve their position, and this would be financially difficult for him, as a private individual. Patel further alleged that the amendment did not result from the additional details that he submitted, which should be considered as part of the proceeding and could be addressed in the evidence stage.
The Opposer related to the case-law and alleged that amendments to the Statement-of-case should be generously and liberally allowed.
In general, the Application relates to a system of control based on etching away metal of a two layer system, to provide an indication of time, temperature, humidity and so on.
The Application is a national phase entry into Israel of a PCT application that claims priority from a number of US provisional applications submitted between 3 June 2008 and 2 May 2009. The Israel application was allowed on published for opposition purposes on 31 May 2016 and the opposition was submitted on 30 August 2016.
After the Opposer submitted their statement of case, the Applicant requested permission to amend the specification. The parties agreed that the amendments should follow Regulation 102vi of the Patent Regulations 1968.
Following this agreement, the Opposer submitted an amended statement of case and the applicant again requested to amend the specification, but this time only amended the dependent claims. The Opposer considered that this amendment was not sufficiently justified and contravened Regulation 95 and should be struck. In a ruling of 28 September 2017, the Deputy Commissioner Ms Jacqueline Bracha rejected the request for the amendment to be canceled and when the Opposer stated that they would not be amending their statement-of-case, she ordered the Applicant to file his counter-statement. The second amendment followed the procedure set out in Regulation 102vi of the regulations.
One the Applicant submitted his statement of case, the Opposer requested that additional details regarding the denial in paragraph 25 of the Applicant’s statement of case. These paragraph related to the Applicant’s response to the Opposer’s contention that the phrase “destructible barrier layer” that appears in the claims is not supported in the priority applications. The Applicant responded, but the Opposer requested interim costs, and that a schedule be set for submission of the evidence. In an interim ruling of 10 April 2018, costs were awarded and a date for the Opposer to submit their evidence was set.
Instead of submitting their evidence, the Opposer has requested to amend their statement of case.
The guiding principle for amending the statement of case before the Patent Office is that unless there are reasons to refuse the request, amending the statement of Case will be allowed, so long as it focuses the discussion on the issues that the parties disagree on. The reasons for not allowing amendments to the Statement of Case are also given:
This court has the authority to allow amendments to the Statement of Case in cases that the amendments relate to the issues that are really disputed by the parties, and where there is no reason NOT to allow the amendment. Such reasons (for not allowing amendments) include inequitable behavior on behalf of the party requesting the amendment, adversely affecting the rights of the opposing party in a manner that cannot be compensated for by a cost ruling, and tardiness in requesting the amendment (see the Request to cancel patent no. IL 154398 (request to correct the statement of case and evidence) Logo Engineering Development ltd vs. State of Israel, 29 April 2012. Furthermore, when exercising the authority, the court should consider the stage that the proceeding has reached, since the Opposition proceeding itself is a barrier to the Applicant obtaining the patent.
(Opposition to Patent 187923 (request to amend the statement of case) Pimi Aggro Clinic ltd vs. Xeda International, 19 May 2013).
In contradistinction to most of the cases where amendments to the Statement of Case have been requested, here the Opposer does not wish to rely on additional publications that were missed in the search for prior art prior to filing the original statement of case.
As the Opposer claims, in this instance, the amendments are by way of honing the claims. The Deputy Commissioner, Ms Jacqueline Bracha does not consider that these sharpening of arguments are necessary at this stage of the proceedings, since the honing and polishing of arguments that are not new arguments, may be done at the evidence stage.
Furthermore, the Deputy Commissioner accepts the Applicant’s arguments that many of the requested amendments are actually a “Response”, as they relate to the Applicant’s statement of case. This is evidenced by the many references in the amended Statement of Case of the Opposer to the Applicant’s Statement of Case. The Statement of Response that the Opposer is entitled to submit under Regulation 61 of the Civil Procedure Regulations 1984 is not the Statement of case that the Opposer is allowed to submit in an Opposition before the Commissioner of Patents. Furthermore, it is clear that there is no place for these amendments, since if the amendment to the Statement of Case is authorized, the Applicant will have the right to File an Amended Statement of Case in response and previously submitted statement of case will no longer represent the points of contention.
In this instance, the parties concur that the amended Statement of Case does raise issues not previously raised or widens the claims raised in the following instances:
- The invention does not deserve priority since the element in claim 1 that is “capable of providing an induction period which is measured by a delay in a visual indication of the destruction of the metal or metal alloy indicator” only appears in this format for the first time in the seventh application from 12 May 2009.
- The claimed invention is directed to a new property of a known product (chapter 7 of the new Statement of Claims.
- The invention has no utility (chapter 8 of the new statement of claims.
The claim that the invention is not entitled to an earlier priority date was in the previous Statement of Case, but based on a different reason. The current basis is, according to the Opposer, a result of the Statement of Case in Response by the Applicant, which added new subject matter. The Deputy Commissioner accepts the Applicant’s contention that the Opposer forwent his right to amend his Statement of Case following the second amendment to the specification, and so the request to now amend the Statement of Case is tardy. Furthermore, the element that allegedly is not entitled to the priority date, was already part of the claims when the Statement of Case was first amended, and so the Opposer had an earlier opportunity to challenge it.
As to the claim that the invention lacks utility, this is based on Fig. 39 of the Application which measures the induction period which was found in the Application prior to the amendment. However, according to the Opposer, were the so called “barrier layer” that is shown in Fig. 3 of the first priority document, which the Applicant relates to in their Response to the request for more details, then that period cannot be measured, and so the invention lacks utility. In other words, from the Applicant referring to Fig. 3, the Opposer concludes both that the Application relates to a new property of a known substance, and that it lacks utility. From here, it appears that there is a connection between the addition of chapters 7 and 8 to the Statement of Case that relates to the utility of the invention, and the determination of the new property of the known material, and the Applicant’s response to the request for additional information.
In light of the above, the Deputy Commissioner accepts the Opposer’s contention that these issues could not have reasonably been submitted earlier.
In conclusion, parts 7 and 8 of the Statement of Claims result from the response to the request for more information, do focus the discussion on the contended issues and their submission is allowed.
The other requests to amend the Specification are refused. The references to “agreement by the Applicant” in the Statement of Case is really a Statement in Response, and so cannot be considered as amendments to the Statement of Case designed to emphasize the points of dispute between the parties. Amendments that are honing of arguments that relate to prior art previously referenced in the Opposer’s Statement of Case, are not necessary to establish the points of contention, and their place is in the evidence and summations. Amendments due to changes in numbering and deletion of claims can help to understand the Statement of Claims and could be submitted, but it should have been done after the second amendment to the specification. Incorporating them at this stage would require the Applicant to amend his Statement of Case and would result in unnecessary expense.
In light of the above
The Opposer will submit their Statement of Case amended as per above, i.e. with the addition of chapters 7 and 8 only. The amended Statement of Case will be submitted within 7 days.
The Applicant will be allowed to amend his Statement of Case by relating to the new Chapters 7 and 8. It is stressed that further amendments to the Statements of Case will only be allowed with explicit authorization, after submitting a detailed requested to amend the Statement of Case. In light of the limited amendment that the Opposer is allowed to make at this time, the Applicant will have 7 days to file their Amended Statement of Case from the submission of the Opposer’s amended Statement of Case.
Any request for extensions that result from Office pressures, festivals, bank holidays, vacations in Israel or abroad or from the need to the coordinate between the various entities, will not be allowed.
Since some of the amendments have been allowed and some have been rejected, no costs are awarded at this stage.
Interim ruling re Request to amend the Opposer’s Statement of Case in Israel Patent Application IL 209734 , by Deputy Commissioner Bracha, 11 June 2018.